The Chilean IP scene has had its ups and downs over the last two years. Firms have recognised the opportunities available and have therefore welcomed the National Institute of Industrial Property’s entry into the Patent Prosecution Highway pilot, along with other Pacific Alliance countries, as well as the US Patent and Trademark Office and the State Intellectual Property Office of the People’s Republic of China. However, Chile’s once prosperous economy stumbled under the previous administration, which had to contend with sub-standard growth and a plunge in interest from foreign investors. The resulting fall in the number of filings and an underlying sense of uncertainty forced the patent market into a low gear. However, last year’s election returned a new government that has pledged to re-energise the economy and already declared itself pro-intellectual property. Although it is still early days, the country’s practitioners anticipate better things to come in Chile’s future.
- Sargent & Krahn
- Albagli Zaliasnik SpA
- Estudio Villaseca
- Johansson & Langlois
- Baker McKenzie
- Beuchat, Barros & Pfenniger
- Clarke Modet & Co
- Claro y Cia
- Porzio Rios Garcia
Albagli Zaliasnik SpA
“Renowned litigation firm” Albagli Zaliasnik has a well-established IP practice that is renowned for its dominance in contentious work on behalf of local generic drug manufacturers. Partner Ariela Agosin is an “exceptional professional” whose expertise bridges the worlds of litigation and intellectual property; she guarantees her pharmaceutical following a staunch defence in infringement proceedings relating to their products. Reinforcing the firm’s contentious offering, pharmaceutical prodigy Eugenio Gormáz is superbly capable in a wide variety of sectors. Together, the dynamic duo have expertly represented clients in battles with multinational goliaths Novartis and Bayer Pharmaceuticals. Gormáz also takes the lead in prosecution, deftly handling prior art searches and national phase applications under the Patent Cooperation Treaty (PCT) for a wealth of companies in the mining and agricultural sectors.
Operating at the forefront of the patent game, the “fantastic individuals” at Alessandri are constantly scoping out the latest and most efficient opportunities to protect rights holders’ innovations. The team’s proactivity and determination to get results shines through as it unrelentingly pursues applications for large multinationals under the PCT; it was quick to subscribe to the Pacific Alliance Patent Prosecution Highway pilot, becoming the first Chilean operation to capitalise on the agreement – axing the time that its clients have to wait for a granted patent. “A deeply experienced patent practitioner”, Jaime Silva Barros takes point as innovation director; the former Silva patent man effortlessly applies his broad know-how to prosecuting applications on behalf of big names in the life sciences sector. Senior associate Francesca RodrÍguez Spinelli’s inter-disciplinary talents are sought after by diverse clients in the chemical, electronics, pharmaceuticals and consumer goods arenas. Handling the full gamut of non-contentious work, she is also a force to be reckoned with in litigation. As a contentious double-team, RodrÍguez Spinelli and managing partner Rodrigo Velasco Alessandri have brought infringement proceedings against regional generic drug manufacturers relating to Bayer Pharmaceuticals’ Yasmin patent and continue to battle on behalf of CODELCO in its ongoing cancellation action regarding the Fenix rescue capsule. Velasco Alessandri is an inexhaustible attorney and exceptional professional and spearheads the group’s endeavours in the IP domain.
“The opponent I respect most is Baker McKenzie” – so says one top-ranked peer, citing the worldwide network of offices that support the global IP icon’s Santiago outpost. “The local office itself produces considerable talent”, which it applies in the dexterous management of national phase PCT applications on behalf of domestic and international corporations in the biotechnology and pharmaceutical sectors. Patrons particularly value the Baker McKenzie attorneys’ broad skillsets, which they take advantage of through the close personal relationships formed between client and lawyer. Reinforcing its offering with powerful M&A and tax departments, the division is a wise choice for transactional negotiations too. The key point of contact is the “excellent” Valentina Venturelli.
Beuchat, Barros & Pfenniger
Beuchat, Barros & Pfenniger is a streamlined prosecution shop with a high-quality output that commands the attention of its peers. “Among the best prosecution practices, it stands out for its traditional approach and highly capable attorneys who prove to be significantly more experienced in patent work than their competitors.” Skilfully executing his instructions, “Andrés Melossi Jiménez is an outstanding attorney, who really makes an impression”. At heart, “he is a profoundly knowledgeable prosecutor”, but stands out for the artful way in which he handles contentious cases.
Carey has a phenomenal IP practice and is the number one firm in Chile. The side has teamed up with the leading filers of patents globally and boasts an impressive share of the market. “It is outstanding in prosecution and maintains a loyal fan base” through its ability to swiftly usher hundreds of patent applications to grant. The group also garners acclaim for its contentious output; it capably represents domestic and international manufacturers in infringement suits. Working side by side, partners Guillermo Carey and Francisco Carey head up the practice. Championing the patent cause nationally and abroad, Guillermo Carey distinguishes himself – he is frequently consulted by the Chilean authorities for his sound counsel. He receives widespread and enthusiastic acknowledgement from his peers, who regard him as “an excellent manager responsible for reams of important instructions”. A seasoned transactional specialist and chief legal counsel to domestic operation Crystal Lagoons, he has assisted the company in the negotiation of licensing agreements relating to its patents throughout its construction of an artificial beach paradise in Las Vegas. Francisco Carey garners equally effusive plaudits, with one foreign associate singing his praises: “I consider him among the best of the foreign agents that I collaborate with. I will continue working with Francisco and his firm moving forward.” “An esteemed attorney, responsive and sophisticated”, he receives first-class feedback for “his practical vision on IP transactions”. Although he is renowned for his extensive trademark practice, Francisco Carey is an expert patent prosecutor as well and works stringently alongside counsel Fernando GarcÍa on behalf of leading names in the manufacturing, chemical and pharmaceutical industries. GarcÍa is known to be a “reputed professional boasting extensive experience in Chilean IP matters” and a “key contributor to the firm’s litigation efforts”.
Clarke Modet & Co
The Santiago branch of Spanish star Clarke Modet brings the group’s signature skills to the Chilean IP scene; the set fosters burgeoning domestic innovation in the country and offers a comprehensive suite of prosecution services to a plethora of industries. The office boasts a sleek outfit of experienced lawyers and engineers, backed up by colleagues across two continents. Taking on a significant volume of work on behalf of regional actors, the local practice is held in high regard by peers who see it as a “relevant” and “driven” competitor, its services “certainly worthy of seeking out”. Technical and legal services manager Mercedes Londoño is a discerning choice for interested parties seeking more information.
Claro y Cia
Corporate mainstay Claro y Cia maintains a streamlined IP practice that focuses on delivering high quality in both prosecution and litigation. It draws on the talents of its consummate professionals inside the firm, as well as a global network of esteemed associates, to ensure successful outcomes in IP enforcement and transactional negotiations. As Chile’s sole member of independent law firm network Lex Mundi, Claro y Cia has immediate access to a vast worldwide talent pool. “An esteemed attorney with an expansive knowledge of intellectual property”, Felipe Claro is a prolific practitioner, rated highly by colleagues for his “excellent litigation capabilities” as well as his non-contentious nous. As one peer enthuses: “He has been in the Chilean patent scene from the very beginning. He’s the one we refer our clients to in a conflict of interest. He distinguishes himself from the rest through a profound mastery of his profession.” A pillar of the domestic and international patent scenes, he was the former vice president of the Association of Industrial Property (ACHIPI) and the International Association for the Protection of Intellectual Property, as well as president of Chile’s arm of the Licensing Executives Society.
Estudio Villaseca’s pre-eminent IP squad cements its status as a stalwart on Chile’s IP stage. Notching-up countless successes in prosecution, litigation and transactions, it has recently expanded its already substantial line-up of technical wizards to bolster its offering. Driving the practice onward, Eduardo Molina and Loreto Vera navigate applicants in the mechanics, mining and pharmaceuticals realms through the twists and turns towards patent protection. The pair perform prosecution magic and can pull the rabbit out of the hat for applicants hoping to turn around rejected applications; they successfully appealed a patent decision in court on behalf of international security presence Tyco and achieved an unusually long period of supplementary protection for a patent belonging to Iowa State University’s research foundation. Molina is a savvy prosecutor and is also adroit when it comes to contentious work. A highly qualified engineer by training, he leads the patent department; meanwhile Vera possesses two decades of experience protecting patents and plant variety rights on behalf of the Chilean research scene. She is adept in transactional negotiations, advising on a variety of agreements for national universities. The outfit is the base for general counsel and IAM Patent 1000 luminary Sergio Amenábar – a former president of the Chilean Association of Intellectual Property and a renowned patent specialist. He channels 45 years of experience into expertly assisting grateful pharmaceutical players with abstruse applications.
Johansson & Langlois
As one peer enthuses: “If I have a client with a mechanical application, I send them to the efficient boutique Johansson & Langlois.” “It has an excellent mechanical team. It is extremely responsible and professional and exhibits ample knowledge of the market,” gleaned over three quarters of a century on the national scene. The patent practice skilfully manages its following’s requirements by handling every aspect of prosecution. Recognising the need for rock-solid intelligence, the side delivers razor-sharp advice and comprehensive prior art searches. Celebrating 30 years as partner at the firm in 2018, “proactive professional Felipe Langlois has learned a lot from his time in the patent domain”; he is an “outstanding practitioner”, an excellent counsellor for his clients and a brilliant prosecutor and leads Johansson & Langlois’s delivery of core patent services. With eight years of experience as an examiner at the patent office, 20 years as an engineer for the country’s best IP sets and work at the European Patent Office and the World Intellectual Property Office (WIPO), Marcela RamÍrez “possesses extensive experience in patent matters in Chile”. Her competitors have nothing but positive things to say about the work she does.
Porzio Rios Garcia
Full-service firm Porzio Rios Garcia remains, at its heart, a dyed-in-the-wool IP practice that has earned the enduring respect of its peers in this theatre. “Renowned in Chile for its patent work”, the team offers tailor-made protection strategies for its devotees and masterfully delivers at the patent office, handling every aspect of an application. At the helm, IP “statesman” and luminary Marino Porzio is an icon – a former deputy-general director at WIPO, a president of ACHIPI and a law professor at the University of Chile – he has made a truly indelible mark on the country’s IP scene.
Sargent & Krahn
“Among Chile’s largest firms, Sargent & Krahn has a capacity for patent prosecution that distinguishes it from the rest. There’s no doubt that you can see a difference between it and its competitors. The outstanding filing and litigation divisions expertly cater to sizeable patent portfolios” on behalf of an illustrious following. The extensive legal team is “outstanding” and is complemented by a multi-talented in-house technical department, which makes light work of instructions across a diverse assortment of disciplines, including pharmaceuticals, biotechnology and physics. “Intelligent, experienced and highly active in patent matters”, Juan Pablo Egaña is “well known as one of the best patent attorneys in the country” and a first choice as collaborator to his peers. A renaissance man, he possesses a skillset that encompasses the worlds of prosecution, litigation and transactions and the advice he dispenses in all three fields is in high demand. A contentious savant, Cristian Barros calls on a wealth of expertise he has accrued over a decade spent as a dedicated student of intellectual property.
An astounding technical reach and an intimate approach enable boutique offering Silva to truly be all things to all men. Delivering an equally dedicated service to both illustrious multinationals and smaller domestic research entities, the firm’s meticulous approach is unrelenting, and as a result it has experienced impressive growth in its prosecution practice and an increased market share. Rights holders value the firm’s supportive approach – boosted by state-of-the-art proprietary software that automates much of the day-to-day graft, allowing the partners to focus their talents on more complex issues. Among others, pharmaceutical titan Gilead Sciences relies on the set to manage significant patent portfolios – while others seek out Silva’s staunch defence when infringement accusations come knocking. For domestic drug outfit Drag Pharma, the side recently dispatched an infringement claim brought by Novartis subsidiary, Vericore – a case with repercussions in the global salmon market. Captaining the department, Sebastian Alvarado guides his clients down every IP avenue, deftly handling enforcement and contractual matters. Having experienced Rodrigo León’s professionalism, a client effervesces: “I enjoy working with Rodrigo not only for his deep knowledge of patent matters in Chile, but also for his timely advice. His responses to my queries are clear and focused on my needs. He applies his expertise and experience to developing rock-solid legal strategies. He is, without doubt, my first choice for patents in Chile.” Together, Alvarado and León are unstoppable; they have championed the IP rights of Chile’s prosperous mining industry, prosecuting a multitude of applications for domestics, including explosives manufacturer ENEAX and Antofagasta Materials. The two also come highly recommended for their transactional prowess. Partner Francisco Silva is an expert prosecutor of applications in any arena. His extensive regulatory expertise has been instrumental to the firm’s portfolio management on behalf of oil giant ExxonMobil and US manufacturer Illinois Toolworks.
Other recommended expertsShowcasing “a more sophisticated approach to patent practice than you get in most patent prosecution agencies”, Allan Jarry undertakes comprehensive portfolio management and prosecution on behalf of technological innovators as principal at JarryIP. A diverse melange of domestic and multinational concerns have followed renowned attorney Juan Francisco Reyes to his boutique outfit SCR Abogados, knowing that he maintains the same level of skill and professionalism that he displayed as partner at Baker McKenzie.
- Ariela Agosin - Albagli Zaliasnik SpA
- Francisco Carey - Carey
- Guillermo Carey - Carey
- Felipe Claro - Claro y Cia
- Juan Pablo Egaña - Sargent & Krahn
- Felipe Langlois - Johansson & Langlois
- Rodrigo Velasco Alessandri - Alessandri
- Sebastian Alvarado - Silva
- Cristian Barros - Sargent & Krahn
- Fernando García - Carey
- Eugenio Gormáz - Albagli Zaliasnik SpA
- Allan Jarry - JarryIP
- Rodrigo León - Silva
- Andrés Melossi Jiménez - Beuchat, Barros & Pfenniger
- Eduardo Molina V - Estudio Villaseca
- Marcela Ramírez - Johansson & Langlois
- Juan Francisco Reyes - SCR Abogados
- Francesca Rodríguez Spinelli - Alessandri
- Jaime Silva Barros - Alessandri
- Francisco Silva Dorado - Silva
- Loreto Vera C - Estudio Villaseca
- Sergio Amenábar V - Estudio Villaseca
- Marino Porzio - Porzio Rios Garcia